USPTO Patents Application 09939139

a. The Office Action suggested that on page 8, line 18, the term -allows-
be replace with the term --allow--.

b. The Office Action suggested that page 10, line 29 be updated to show
correct units. In response, applicants changed "(m" to -mm- to clarify the units.

c. The Office action suggested that, "reference character '116' has been
used to designate both an end (page 10, line 18) and a housing (page 10, line 20). In
response applicants have amended above and submitted new formal drawings, which
change the specification and drawing such than numeral "117" indicates the housing
and numeral "116" indicates the ends.

d. The Office Action suggested that reference character "414" has not been
included in the drawings. Applicants have added the character to the new drawings.

e. The Office Action suggested that reference character "1 08" has not been
included in the drawings. Applicants have added the character to the new drawings.

f. The Office Action suggested that reference character "272" has been
used to designate both a rigid frame (page 15, line 27) and a dielectric sheet (page 15,
line 28). In response, applicants have changed "sheet 272" to "sheet 270" to be
consistent with the rest of the application.

g. The Office Action suggested that reference character "278" has not been
included in the drawings. Applicants have removed the character from the application.

h. The Office Action suggested that reference character "288" has not been
included in the drawings. Applicants have changed the character to "248" in the
specification to correspond with the rest of the application.

i. The Office Action suggested that reference character "296" has not been
included in the drawings. Applicants have added the character to the new drawings.

j. The Office Action suggested that a reference is missing on page 22, line
26. Such reference has been added to the application.

k. The Office Action suggested that reference character "514" has not
been included in the drawings. Applicants have removed the character from the
application.

7

II. Drawings

The Office Action objected to the drawings. The Office Action suggested that
the drawings included reference numbers "128" in Figure 2; "170" in Figure 4; and
"248" in Figure 6; which were not in the specification. A new set of formal drawings is
submitted herewith and has the following changes:

Reference numeral "128" has been removed from Figure 2.

Reference numeral "170" has been changed to "1 16" in Figure 4 to correspond
to the specification.

With regard to reference numeral "248", Applicants point out that the
specification recites numeral "248" at page 15, line 12.

The Office Action also suggested that reference number "502" in Figure should
be "520". Such change has been made.

III. Claim Objections

The Office Action objected to claim 21 because it was dependent on claim 22.
Claim 21 has been amended to be dependent upon claim 20 as suggested by the
Office Action.

IV. Claim Rejections under 35 U.S.C. 101

The Office Action rejected claim 18 under 35 U.S.C. 101 suggesting that the

claim discloses an invention that "is inoperative". The Office Action also suggests

that the, "applicant intends the term 'protrusion', as in claim 1, to be defined as a

probe means, since claim 1 distinguishes a protrusion from an opening." However,

the Office Action misinterprets that term "protrusion". The Examiner is directed to

page 4, line 5 as follows:

As used herein, the term "protrusions" generally refers to
controlled forces or displacements applied by a probe, or device to
a fabric sample for causing at least a portion of the fabric sample to
be forced through an opening defined in a plane of a sample
support member. Preferably a protrusion as used herein will be of
sufficient magnitude for effecting such sample manipulation without

8

piercing the sample. In some embodiments, however, it is
contemplated that piercing will or desirably should occur.

Thus, the term protrusion generally refers to a force or displacement, which
though may be achieved by use of a probe means, is not so limited. In light of this
information. Applicants request that the rejection of claim 18 under 35 U.S.C. 101 be
withdrawn.

V. Reiections under 35 U.S.C. 103

The Office Action rejected claims 1-35 and 50 under 35 U.S.C. 103(a) as being,
unpatentable over combinations of U.S. Patent Nos. 3,835,697, 5,795,989, 3,618,372,
3,818,751, 2,786,352, 4,567,774, 3,151,483, 3,613,445 and 2,590,839 respectively to
Schmider, Simmons, Beckstrom, Karper, Sobota, Manahan, Plummer, Dent and
Clapham. Applicants respectfully traverse these rejections and request
reconsideration in light of the following remarks. To expedite prosecution, however.
Applicants have amended claim 1 .

Applicants traverse on at least two grounds. First, Applicants believe that the
claim rejections are legally inadequate since the motivation cited by the Office Action
to combine the references of record is legally inadequate. Second, all the limitations
of claims are not taught or suggested by the references of record.

For rejecting claim 1 and claims 2-31 of the present application, the Office
Action asserts a strained combination of three references and suggests that since one
step of claim 1 is taught by each of the three references, the claimed invention is
obvious. In particular, the Office Action reads, at page 6, that, "Schneider clearly
anticipates the first step of claim 1... Sobota clearly anticipates the second step of
claim 1 ...[and] Dent clearly anticipates the third steps of claim 1 ..." The Office Action
then reads that a, "prima facie case to combine references by one of ordinary skill in
the art has been established by the fact that all the references are within the same
technology of testing fabric/sheet materials." Thereafter, the Office Action reasserts
this same "prima facie case to combine references" for using additional references to
reject the claims dependent on claim 1 (i.e., claims 2-31) and to reject claims 32-34.

This rejection of claim 1 , its dependents and claims 32-34 is legally inadequate

9

because the reason for combination of the references in the office action is too broad.
As the CAFC wrote in In re Lee. (CAFC, 2002), emphasis added, "there must be some
motivation, suggestion or teaching of the desirability of making the specific
combination that was made by the applicant" See also In re Fine, 5 USPQ2d 1596
(Fed. Cir. 1988); In re Dow Chemical Co., 5 USPQ2d 1529 (Fed. Cir. 1988); In re
Geiger, 2 USPQ2d 1276 (Fed. Cir. 1987). In contrast to this requirement, the Office
Action suggests, at page 6, that three different steps from three different references
can be combined for an obviousness rejection merely because the references come
from one very large category of technology (i.e., "testing fabric/sheet materials"). Such
a rejection is based upon hindsight and should be withdrawn.

Applicants also traverse the present rejections on the ground that not all of the
limitations of the claims are taught or suggested by the references of record or the
prior art. The Office action reads, at page 8, that, "Claims 4, 5, and 6 are each
directed to the method of claim 1 comprising throughput rates for each fabric sample
of not greater than ten minutes, not more than two minutes, and not more than 20
seconds." The Office Action further reads that, "Schneider, Sobota and Dent do not
disclose that their devices are limited to operating during a specific time period."
Based on this, the Office Action makes the conclusory statement that the, "devices of
Schneider, Sobota or Dent individually have the inherent capability to test a fabric
sample within or for any amount of time desired."

Such a conclusory statement, which is based upon what the references of
record do not teach or suggest, is inadequate to satisfy the legal requirements of an
obviousness rejections. As the CAFC wrote in reversing the BPAI, "The board cannot
rely on conclusory statements when dealing with particular combinations of prior art
and specific claims, but must set forth the rationale on which it relies." In re Lee . 61
USPQ2d 1430, 1435 (CAFC, 1997). Thus, the conclusory statement in the Office
Action does not substitute for some teaching or suggestion in the prior art to perform
the method of the present invention at the rates in claims 4, 5 and 6.

In conclusion. Applicants contend that the rejections in the Office Action are
legally inadequate and should be withdrawn.

10

VI. Claim 1 Amendments

Claim 1 has been amended to provide "four" samples on "at least one
substrate" and "protrusions of each of the samples... are caused at a throughput rate
no greater than about two minutes per sample." Applicants believe that these
amendments distinguish even further over the references of record, particularly in view
of the remarks above.

The foregoing amendments are taken in the interest of expediting prosecution
and there is no intention of surrendering any range of equivalents to which Applicant
would othenwise be entitled in view of the prior art.

By amending the application, the Applicants do not concede that the patent
coverage available to them would not extend as far as the original claim. Rather,
Applicants intend to file a continuation application to pursue the breadth of the
claims as filed. Applicants believe that the Examiner has not made a sufficient
showing of inherency of the teachings of the asserted prior art, especially given the
lack of teachings in the cited references of the properties that Applicants have
recited in their claims.

Further, by the present amendment, it does not follow that the amended
claims have become so perfect in their description that no one could devise an
equivalent. After amendment, as before, limitations in the ability to describe the
present invention in language in the patent claims naturally prevent the Applicants
from capturing every nuance of the invention or describing with complete precision
the range of its novelty or every possible equivalent. See, Festo Corp. v. Shoketsu
Kinzoku Kogyo Kabushiki Co. , 62 USPQ2d 1705 (2002). Accordingly, the foregoing
amendments are made specifically in the interest of expediting prosecution and there
is no intention of surrendering any range of equivalents to which Applicants would
othenA^ise be entitled.

CONCLUSIONS

In view of Applicants' amendments and remarks, the Examiner's rejections
are believed to be rendered moot. Accordingly, Applicants submit that the present

11

application is in condition for allowance and requests that the Examiner pass the case
to issue at the earliest convenience. Should the Examiner have any question or wish
to further discuss this application, Applicant requests that the Examiner contact the
undersigned at (248) 593-9900.

If for some reason Applicant has not requested a sufficient extension and/or
have not paid a sufficient fee for this response and/or for the extension necessary to
prevent the abandonment of this application, please consider this as a request for an
extension for the required time period and/or authorization to charge Deposit Account
No. 50-0496 for any fee which may be due.

Respectfully submitted,

Dated:

, 2003

Scott A. Chappie ^
Registration No. 46.287
DOBRUSIN &THENNISCH PC
401 S. Old Woodward Ave., Ste. 31 1
Birmingham, Ml 48009
(248) 593-9900

Customer No. 25215

12

VERSION WITH MARKINGS TO SHOW CHANGES MADE

In the Specification:

Paragraph on page 8, beginning at line 7 has been amended as follows:

Fig. 3A shows a cross-sectional view of one preferred sample holder 102
which is comprised of a first plate 402 having a plurality of through-holes 406 and a
second plate 404 having a plurality of openings 407 wherein the through-holes 406
and the openings 407 are aligned with each other forming tunnels 410 within the
sample holder 102. Since the array 230 are protruded through the openings 407,
their size and shape can affect the fabric handle measurements and are taken into
consideration in measuring the fabric handle of the array 230. For instance, each of
the openings 407 preferably is large enough for the array sample 230 to collapse
upon itself, while still maintaining a portion of itself in physical contact with the walls
of the opening 407 during the protrusions. Referring to Fig. 3A, one preferred
leading edge 408 to the opening 407 must allow fallowsl for a smooth transition for
the sample 230 to transfer from a flat state to the bent and folded state which occurs
during the protrusions. Thus, it is preferred that the opening 407 is constructed of a
smooth material or coated with a smooth material (e.g., a plastic layer, a coating, or
the like). Although the openings 407 can be any shape and/or size, it is preferred
that they are funnel-shaped or otherwise a rounded or a tapered periphery with a
diameter at the top of each funnel that is twice of the bottom diameter, and with the
height of the sloped section at least equal to the height of the straight section. For
examples of other preferred embodiments of the openings 407 that may be used
during fabric handle screens, see Fig. 3C-J. Other variations or combinations of
such structures are also possible. The through-holes 406 can also be any shape or
size as long as they do not restrict or inhibit the protrusions of the array 230 by the
probes 104. Furthermore, depending on the direction of the protrusions, the first
plate 402 may be placed above the second plate 404 with its openings 407 as
shown in Fig. 3A, or vice versa, as shown in Fig. 3B.

13

Paragraph on page 10, beginning at line 9, has been amended as follows:

The PDMA 100 includes at least one actuator for moving the probes 104 and
the samples 230 in relation to each other. In one preferred embodiment, the
actuators are attached to the probes 104 and the samples 230 remain stationary. In
another preferred embodiment, the actuators are attached to the sample holder 102
and the probes remain stationary. In yet another preferred embodiment, both the
probes 104 and the sample holder 102 have actuators attached allowing them to
both become non-stationary. In an exemplary preferred embodiment, the PDMA
100 includes first 110 and second 112 translation actuators for displacing the array
230 in a direction normal 1 14 to surfaces containing the array 230 and the ends 116
of the probes 104. The first translation actuator 110, which is attached to the
sample holder 102 via a housing 117 rhousing 116] that surrounds the second
translation actuator 112, provides relatively coarse displacement of the sample
holder 102. A useful first translation actuator 110 includes a motorized translation
stage available from POLYTEC PI under the trade name M-126 Translation Stage,
which has a translation range of 25 mm and a resolution of 0.1 |j,m. The second
translation actuator 112, which is attached directly to the sample holder 102,
provides relatively fine displacement of the sample holder 102. A useful second
translation actuator 112 includes a preloaded piezoelectric stack available from
Polytec PI under the trade name P-753 LISA Linear PZT Stage Actuator, which has
a translation range of 30 mm [(m1 and can provide a 100-N pushing force and a 20-N
pulling force. The PDMA 100 typically controls the first 110 and second 112
translation actuators using a DC motor controller and an amplifier/position servo
controller, respectively, which are linked to a suitable general-purpose computer (not
shown). In an alternative embodiment, the first 110 translation actuator is mounted
on an x-y translation stage (not shown), which allows movement of the sample
holder 102 in a direction substantially parallel to the surfaces containing the array
230 and the ends of the probes 104. This latter embodiment is useful when the
sample holder 102 must be moved laterally to align different groups of array samples

14

230 with the probes 104 during screening— i.e., when the PDIVIA employs fewer
probes 104 than samples in the array 230 and the probes 104 are stationary.

Paragraph on page 15, beginning at line 23, has been amended as follows:

Fig. 7 and Fig. 8 provide further details of the sensors 106 and sensor boards
232. 234, showing respectively, a bottom perspective view and a close-up top view
of the first sensor board 232. The first 232 and second 234 sensor boards generally
comprise a flexible multi-layer dielectric sheet 270 (e.g., polyimide) and a rigid frame
272 (e.g., FR-4 epoxy glass laminate) that is bonded to the periphery of the dielectric
sheet 270 [sheet 272]. Electrically conductive traces 274 are embedded on top 276
or bottom surfaces [278] of the dielectric sheet 270, or between layers of the flexible
sheet 270, forming a double-sided flex circuit 280. Each sensor 106 is mounted on
the top surface 276 of the flex circuit 280, and leads 282 on the sensors 106 are
connected to conductive traces 274 that terminate at a standard card edge
connector 284. Conventional ribbon cables can be used to link the card-edge
connector 284 with peripheral recording and control devices (not shown) allowing
communication between the sensors 106 and the peripheral devices.

Paragraph on page 16, beginning at line 30, has been amended as follows:

Referring to Fig. 6-8, threaded holes 248[288], 290 in the upper 236 and
lower 238 support plates are sized to receive set-screws 292 that the PDMA 100 can
use to pre-load each of the sensors 106 mounted on either the first 232 or second
234 sensor boards. As noted in the description of Fig. 4, the flexure strips 150 used
to align the probes 104, are compliant for displacements normal 114 to the plane
containing the array 230, but are mechanically stiff for displacements in other
directions. Moreover, the effective spring constants of the flexure strips 150 are
substantially less than the spring constants of the sensors 106 so that the flexure
strips 150 ordinarily exert minimal influence on the measured responses of the array
230 to protrusions. However, since the sensors 106 are mounted on the flex circuit

15

280, the set-screws 292 can apply a force to the stiffeners 286 and the sensors 106
in absence of a force on the test fixture 118. A force recorded by the sensors 106
will therefore be the sum of the force acting on the test fixture 118 and the pre-load
force. Since many commercial force sensors can detect only tensile or compressive
loads, pre-loading permits a compressive sensor to detect small tensile loads, or a
tensile sensor to record small compressive loads, expanding the capabilities of the
PDMA 100. Note that the lower support plate 238 and the second sensor board 234
both include unthreaded holes 294, 296 that provide access to the set-screws 292 in
the upper support plate 236.

Paragraph on page 22, beginning at line 18, has been amended as follows:

Fig. 10 shows a perspective view of another instrument suitable for screening,
and specifically, an automated rapid serial system (ARSS) 500 that can be used to
conduct high throughput fabric handle screening of an array of fabric samples by
measuring responses of the array samples to protrusions. The ARSS 500 can be
configured for use with parallel, serial or serial-parallel protocols. In a most
preferred embodiment, the ARSS 500 can be configured for use in a rapid serial
fashion with a high sample screening throughput. Detailed description of the ARSS
500 is described in commonly owned and co-pending U.S. Patent Application Serial

No. 09/939,252 rSerial No. ] titled "High Throughput Mechanical Rapid

Serial Property Testing of Material Libraries," (P. Mansky) filed on August 24, 2001,
which is herein incorporated by reference. Generally, ARSS 500 includes a variety
of robotic instruments for automatically or programmably providing predetermined
motions for protruding an array of fabric samples 502 according to a predetermined
protocol. ARSS 500 may be adapted or augmented to include a variety of hardware,
software or both to assist it in determining the fabric hand of the array members.
Hardware and software for augmenting the robotic systems may include, but are not
limited to, sensors, transducers, data acquisition and manipulation hardware, data
acquisition and manipulation software and the like. Exemplary robotic systems are

16

commercially available from CAVRO Scientific Instruments (e.g., Model NO.
RSP9652) or BioDot (Microdrop Model 3000).

Paragraph on page 24, beginning at line 28, has been amended as follows:

The ARSS 500 includes actuator(s) [514] for moving the probe(s) 512 and the
samples 502 in relation to each other. In one preferred embodiment, the actuator
[514] is attached to the probe 512 and the samples 502 remain stationary. In
another preferred embodiment, the actuator [514] is attached to the sample holder
504 and the probe 512 remains stationary. In yet another preferred embodiment,
both the probe 512 and the sample holder 504 have actuators [514] attached
allowing both of them to translate.

In the Claims:

Claims 4 and 5 have been canceled. Claims 1 and 21 have been amended
as follows:

1 . (Amended) A method for screening fabric handle of an array of fabric
samples, comprising:

providing an array of at least four [two] fabric samples upon at least one
substrate :

[protruding] causing protrusions of each of said fabric samples through
openings in said at least one substrate wherein said protrusions are caused by
contacting a probe with said fabric samples using an automated svstem that moves
said probe, said fabric samples, or both relative to each other and wherein said
protrusions are caused at a throughput rate no greater than about two minutes per
sample ; and

monitoring a response of each of said fabric samples to said protrusions for
assisting in measuring relative fabric handle for each of said fabric samples .

21. (Amended) The method of Claim 20 [22], wherein a gap of at least
about one millimeter gap exists between said first plate and said second plate.

17